Trion Worlds v. Palladium Books Trademark Counter-Suit

The lawsuit filed by Palladium Books against Trion Worlds over the “Rifts” trademark case is over. The judge dismissed it last week for lack of jurisdiction. This week we see movement on the counter-suit filed by Trion Worlds against Palladium Books regarding the same trademark in a California court. Trion argues that the trademark “Rifts” on video games is not a valid trademark. Specifically, Trion contends that Palladium provided insufficient evidence that they produced digital games based on the “Rifts” trademark to the USPTO to sustain the trademark.  In fact, Trion uses the word “fraud” several times to describe the evidence Palladium provided to the USPTO . Here is what Trion asked for from the court.

A. For a declaratory judgement that:

1. Trion Worlds has not and does not infringe any of Palladium Books’ rights in the Marks and has not and does not engage in any false designation of origin or unfair competition under 15 U.S.C. & 1114, 15 U.S.C & 1125; and

2. Palladium Books’ ‘353 Registration is merely descriptive, lacks secondary meaning and is not entitled to trademark protection under the Lanham Act or common law.

B. For an order canceling Defendant’s Registered Trademarks Nos. 2,045,806; 3,036,181; and 3,213,944 under 15 U.S.C & 1064 and 15 U.S.C & 1119.

C. For costs;

D. For such other and further relief as the Court may deem just and proper.

The Trion requests are broad and potentially very damaging to Palladium. The first request kills any hope of a re-file of the Palladium lawsuit. Secondly, stripping  trademark protection altogether completely eliminates any future issues with the trademark for Trion and the final request asks Palladium for court costs.  Orders granting the first two are bad for Palladium, but paying Trion’s court costs (the cost of which is unknown) is a potentially painful penalty to Palladium.

Here is the original filing.

Trion_Worlds_Palladium_Books_Countersuit

I will continue to monitor the case as it proceeds.

Trask, The Last Tyromancer

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trask

Trask is a long-time gamer, world traveler and history buff. He hopes that his scribblings will both inform and advance gaming as a hobby.

9 thoughts on “Trion Worlds v. Palladium Books Trademark Counter-Suit

  • June 15, 2010 at 8:39 am
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    In my opinion, no matter who files suit, the facts are still going to have to be weighed. Does Rift:Planes of Telara violate Palladium Books Trademark? This is the issue pivotal issue.

    If Trion fails to prove that their game does not infringe upon Palladiums trademark then they too could find themselves in big trouble. In my opinion, Palladium has to protect it trademark or lose it. That’s the precedent in trademark law.

    I don’t think that anyone has even begun to talk about the content issues, because as I have begun to study Planes of Telara, i see to blaring examples of ideas and even visuals that could be construed to have been swiped from Palladium Books.

  • June 15, 2010 at 9:26 am
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    Just when I thought I could take a day off from this…

    Good scoop, Trask. I’ve been mulling this over all weekend, thinking about how it will all proceed, but I didn’t anticipate this. Once again, I suppose that shows what I know! 🙂

    With respect to my friend, Mark, I’d remind everyone that the pivotal issue is probably not whether or not Trion violate’s Palladium’s trademark, but whether or not Palladium’s trademark is valid in the first place. If it wasn’t before, that is now the pivotal issue.

    I’d further remind everyone that content is not the issue in this case, and never has been. Even Palladium hasn’t suggested that Trion is infringing on the actual content of the RIFTS property.

  • June 15, 2010 at 10:56 am
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    Palladium has the option of asserting counterclaims in Trion’s suit, making the same arguments it did in the Michigan suit that was dismissed for lack of personal jurisdiction — and could even move for a preliminary injunction in Trion’s suit. It might as well counterclaim since it has to litigate the issue anyway given Trion’s request for a declaratory judgment of non-infringement.

    I get the feeling you’re interpreting “costs” as including attorney’s fees. It doesn’t. “Costs” are a term of art defined by statute (28 USC Section 1921), and typically cover things like filing fees, fees paid to process servers to serve the complaint, copying costs for documents necessarily required for trial, etc. The term doesn’t cover the big ticket items like attorney’s or expert’s fees.

    The Lanham Act doesn’t seem to allow for an award of fees to a prevailing party in a suit to cancel a registration — it’s not specifically spelled out as a form of relief under the provisions governing civil liability for a false or fraudulent registration (see 15 USC Section 1120), and absent such an express statement fees aren’t recoverable.

    Even in an infringement action, an award of fees is not a matter of right — the Lanham Act permits such an award only in “exceptional cases,” which generally requires a showing (by a successful infringement plaintiff) of “malicious,” “fruadulent,” “deliberate” or “willful” infringement or (by either a successful plaintiff or defendant) some similarly bad conduct during the course of the litigation.

  • June 15, 2010 at 8:49 pm
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    I watched the trailers for Rift:Planes of Telara and they DO seem to have a lot of similarities to RIFTS. However, some things in RIFTS has a lot of similarities to other things: Dog Boys and mutant animals in TMNT/ the Dominator ship image and the Star Wars Death Star / Cosmo-knights and the Green Lantern Corps/ Coalition and Nazi Germany/ RIFTS and DnD Planescape/ Runeswords and Michael Moorcock’s Elric/ Dead Reign and any zombie movie/ RIFTS and Raymond E. Feist’s “The Riftwar Cycle”/ Beyond the Supernatural and most monster movies/ Rifts: Australia and Mad Max/Road Warrior.

    Before they sued Trion, maybe Palladium should have looked in the mirror first.

    • June 22, 2010 at 10:41 pm
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      Let’s look at some of your comparisons.

      Dog boys and mutant animals in TMNT –> Moot point, since you can’t trademark “mutant animals”, only specific representations of them (which is why the new After the Bomb doesn’t have any of the characters from TMNT at all, since they no longer hold that license.) And Kevin is well aware of this, or he would’ve probably tried to sue every furry artist out there.

      Cosmo-knights and the Green Lantern Corps –> Apples and oranges. The Cosmo-knights are NOT powered by rings, do NOT have to recharge their power, are NOT powerless against the color yellow, and probably do NOT fly around the universe wearing black and green tights. If there were enough similarities, D.C. Comics (which is also notoriously lawsuit-happy) would’ve sued them by now.

      Coalition and Nazi Germany –> Apples and oranges again. Sure, they’re both fascist regimes, but that’s pretty much it. Only the Totenkampf (death camp) personnel used a skull as a symbol… and even then it was turned slightly to the left, not face-on like the Coalition. The Nazis were more fond of eagles and lightning bolts. You can’t trademark the words “fascist regime”, but you can trademark the Coalition as a REPRESENTATION of a fascist regime.

      Rifts and DnD Planescape –> Irrelevant, since Rifts is not a fantasy RPG. Yes, it does have elements, like magic, that might be considered “fantasy”… but then again, SO DOES SHADOWRUN, which came out a year before Rifts.

      Beyond the Supernatural and most monster movies –> invalid comparison, because you could also say “most horror RPGs and most horror movies and most horror video games”. This comparison doesn’t apply JUST to Beyond the Supernatural, it also applies to several other RPGs, which also predate BTS.

      Dead Reign and any zombie movie –> See above… “any zombie game and any zombie movie” is more accurate. Matter of fact, All Flesh Must Be Eaten (AFMBE) came out *before* Dead Reign.

      Rifts: Australia and Mad Max/Road Warrior –> Not even remotely a valid comparison beyond the “most of Australia is a wasteland” comparison. In Mad Max, Bartertown is the ONLY city that still exists, and I doubt that you could call it “high tech” by ANY stretch of the imagination, unlike Melbourne and Perth, which ARE high-tech. Oh, and it was written by an Australian freelance writer, and NOT by Kevin, just fyi.

      As for the rest of your comments, e.g. the Dominator ship vs. the Death Star, Runeswords vs. Elric, Rifts vs. “The Riftwar Cycle”… well, you got me on the first. It’s similar, but obviously not similar enough for George Lucas to bother about. As for the other two, I can’t comment, because I haven’t read the Elric saga or the Riftwar Cycle.

      Ultimately, everyone borrows from everyone else. That’s why they say there’s only 7 main plots in all of literature (or as many as 36, depending on who you talk to). And if it weren’t for that, we’d have no need for websites like TVTropes.org.

  • June 17, 2010 at 8:52 pm
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    For the Record I use to be a major fan of Palladium Book’s Products, but that change a number of years ago (for many reason). And Today I am no fan or friend of BP.

    That being said, I fail to understand how a court could dismiss Palladium’s issues. If they were in non competative industries yet they could both use the name, but they are not, Video Games and RPG’s are considered to be competators for the same entertainment dollars.

    As per the above post, Rifts has a good about of original ideas, there is diffently infulence from other sources (Thundar the Barbarian for one not stated above), every story creater in influence from other sources (Star Wars came from several different movies, in fact the entire final battle is from a movie called “The Damn Busters” nearly line for line).

    The problem for me at this point is it is hard to feel any sympanty for Palladium Books. They have turned on there supporters, not done right by there fans, have let there game suffered by a system that considered poor when created, and attacked people who have seeked to help them.

    Ben

  • June 25, 2010 at 2:55 am
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    The simple reality of it is that it is hard to protect a single word trademark especially a rather common word like Rifts. If Palladium Books had thought it through a little more and did something like Rifts:Plane Wars or ext for their trademark it would be easier to make a case against Trion Worlds, but currently as it stands their trademark is practically fair game. Trion is likely to win this one Palladium books really should of been more careful.

  • June 29, 2010 at 9:40 am
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    The important takeaway from this case is that the judge ruled a Michigan court is not able to enjoin a California company from attending a trade show in California. The ruling isn’t a referrendum on the trademark case as the scope of this case was injunction at the trade show, and the case was thrown out because of jurisdiction.

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